IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Hays et al.
`U.S. Patent No.: 5,659,891 Attorney Docket No.: 39521-0004IP1
`Issue Date:
`Aug. 19, 1997
`Appl. Serial No.: 08/480,718
`Filing Date:
`Jun. 7, 1995
`Title:
`MULTICARRIER TECHNIQUES IN BANDLIMITED CHAN-
`NELS
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF UNITED
`STATES PATENT NO. 5,659,891
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`i
`
`

`

`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ....................... 1
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1
`C. Counsel Under 37 C.F.R. § 42.8(b)(3) and Service Information ............. 1
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................ 2
`II.
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ..................... 2
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 2
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 2
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 3
`1.
`“Single mask-defined, bandlimited channel” (Claims 1, 3, and 5) ........... 4
`2.
`“Plurality of Transmitters” (Claim 5) ........................................................ 5
`3.
`“Paging” (Claims 1, 3, 5) ........................................................................... 6
`IV. SUMMARY OF THE ‘891 PATENT .......................................................... 7
`A. Brief Description ....................................................................................... 7
`B. Summary of the Prosecution History of the ’891 Patent .......................... 8
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM
`FOR WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF
`THE ‘891 PATENT IS UNPATENTABLE ................................................ 9
`A. [GROUND 1] – Petrovic Anticipates Claims 1-5 .................................... 9
`1.
`Claim 1 .......................................................................................... 16
`2.
`Claim 2 .......................................................................................... 19
`3.
`Claim 3 .......................................................................................... 21
`4.
`Claim 4 .......................................................................................... 24
`5.
`Claim 5 .......................................................................................... 25
`B. [GROUND 2] – Petrovic in view of Raith and Alakija Renders Claim 5
`Obvious ................................................................................................... 28
`C. [GROUND 3] – Cimini Anticipates Claims 1-5 .................................... 35
`1.
`Claim 1 .......................................................................................... 39
`2.
`Claim 2 .......................................................................................... 42
`3.
`Claim 3 .......................................................................................... 42
`4.
`Claim 4 .......................................................................................... 45
`5.
`Claim 5 .......................................................................................... 46
`D. [GROUND 4] – Cimini in view of Raith and Alakija Renders Claim 5
`Obvious ................................................................................................... 50
`VI. REDUNDACY ............................................................................................. 57
`ii
`
`
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`VII. CONCLUSION ............................................................................................ 57
`
`iii
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`EXHIBITS
`
`
`APPLE-1001
`
`APPLE-1002
`
`U.S. Patent No. 5,659,891 to Hays et al. (“the ‘891 patent”)
`
`Excerpts from the Prosecution History of the ‘891 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Docket for Mobile Telecommunications Technologies, LLC v.
`Apple Inc., Case No. 2:13-CV-258 (E.D. Tex.)
`
`APPLE-1004
`
`Declaration of Dr. Apostolous Kakaes (“Kakaes Declaration”)
`
`APPLE-1005
`
`APPLE-1006
`
`APPLE-1007
`
`APPLE-1008
`
`APPLE-1009
`
`Plaintiff’s Opening Brief on Issues of Claim Construction from
`Mobile Telecommunications Technologies, LLC v. Apple Inc.,
`Civil Action No. 2:13-cv-258-JRG-RSP (E.D. Tex.)
`
`Claim Construction Order from Mobile Telecommunications
`Technologies, LLC v. Apple Inc., Civil Action No. 2:13-cv-258-
`JRG-RSP (E.D. Tex.)
`
`Claim Construction Order from Mobile Telecommunications
`Technologies, LLC v. Clearwire Corp., Civil Action No. 2:12-
`cv-308-JRG-RSP (E.D. Tex.)
`
`Dr. Rade Petrovic et al., Permutation Modulation for Advanced
`Radio Paging, IEEE Proceedings of Southeastcon '93 (7 Apr
`1993) (“Petrovic”)
`
`Leonard J. Cimini, Analysis and Simulation of a Digital Mobile
`Channel Using Orthogonal Frequency Division Multiplexing,
`33 IEEE Transactions on Communications 665 (Jul. 1985)
`(“Cimini”)
`
`APPLE-1010
`
`WIPO Publication No. 1989/008355 to Raith et al. (“Raith”)
`
`APPLE-1011
`
`C. Alakija and S. P. Stapleton, A Mobile Base Station Phased
`Array Antenna, 1992 IEEE International Conference on Select-
`
`iv
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`ed Topics in Wireless Communications at 118 (Jun. 1992)
`(“Alakija”)
`
`APPLE-1012
`
`U.S. Patent No. 5,590,403 to Cameron et al. (the ‘403 Patent)
`
`
`
`v
`
`

`

`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-5 (“the Chal-
`
`lenged Claims”) of U.S. Patent No. 5,659,891 (“the ‘891 patent”), of assignee Mo-
`
`bile Telecommunications Technologies, LLC (“Patentee” or “MTel”). As ex-
`
`plained in this petition, there exists a reasonable likelihood that Apple will prevail
`
`with respect to at least one of the Challenged Claims.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Petitioner, Apple Inc., is the real party-in-interest.
`
`
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Apple is not aware of any terminal disclaimers for the ‘891 Patent. The ‘891
`
`Patent is involved in three pending litigations (the Litigations), one naming Apple
`
`as a defendant: Mobile Telecommunications Technologies, LLC v. Apple Inc., Case
`
`No. 2:13-CV-258 (E.D. Tex.) (hereinafter “the Apple litigation”); Mobile Tele-
`
`communications Technologies, LLC v. Leap Wireless International, Inc., Case No.
`
`2-13-CV-885 (E.D. Tex.); and Mobile Telecommunications Technologies, LLC v.
`
`T-Mobile USA, Inc., Case No. 2-13-CV-886 (E.D. Tex.).
`
`C. Counsel Under 37 C.F.R. § 42.8(b)(3) and Service Infor-
`mation
`
`Apple designates W. Karl Renner, Reg. No. 41,265, as Lead Counsel and
`
`Thomas A. Rozylowicz, Reg. No. 50,620, as Backup Counsel, both available at
`
`
`
`1
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T: 202-783-
`
`5070, F: 202-783-2331). Please address all correspondence and service to counsel
`
`at the address provided in this section. Apple also consents to electronic service by
`
`email at IPR39521-0004IP1@fr.com.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`II.
`Apple authorizes the Patent and Trademark Office to charge Deposit Ac-
`
`count No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and fur-
`
`ther authorizes payment for any additional fees to be charged to this Deposit Ac-
`
`count.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Apple certifies that the ‘891 Patent is available for IPR. Apple also certifies
`
`that it is not barred or estopped from requesting an IPR challenging the patent
`
`claims on the grounds identified in this petition. The present petition is being filed
`
`within one year of when Apple’s waiver of service was filed in the co-pending dis-
`
`trict court litigation, Case No. 2:13-CV-258. See APL-1011, p. 9; see also Macau-
`
`to U.S.A. v. BOS GMBH & KG (IPR2012-00004), Paper No. 18 at 16.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Request-
`ed
`
`Apple requests IPR of the Challenged Claims of the ‘891 Patent on the
`
`grounds set forth in the table below, and requests that each of the claims be found
`
`2
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`unpatentable.
`
`Ground
`
`‘891 Patent
`
`Basis for Rejection
`
`Claims
`
`Ground 1 1-5
`
`§ 102 based on Petrovic
`
`Ground 2 5
`
`§ 103 based on Petrovic in view of Raith and
`
`Alakija
`
`Ground 3 1-5
`
`§ 102 based on Cimini
`
`Ground 4 5
`
`§ 103 based on Cimini in view of Raith and
`
`Alakija
`
`
`
`
`
`
`The ‘891 patent issued from an application filed on June 7, 1995. The ‘891
`
`patent does not claim priority to any previous applications.
`
`Petrovic, Cimini, Raith, and Alakija each qualify as prior art under 35 U.S.C
`
`§ 102(b). Specifically, they were each published no later than April 7, 1993, which
`
`is more than one year prior to the June 7, 1995 priority date to which the ‘891 pa-
`
`tent is entitled. None of tese references has never before been considered by the
`
`Patent Office in this case
`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`
`
`3
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`of the specification of the patent in which it appears.” 1 37 C.F.R. § 42.100(b).
`
`Accordingly, for purposes of this proceeding only, Apple submits constructions for
`
`the following terms. All remaining terms should be given their plain meaning.
`
`1.
`
`“Single mask-defined, bandlimited channel” (Claims
`1, 3, and 5)
`
`Under the broadest reasonable construction standard, Petitioner proposes
`
`that a “single mask-defined, bandlimited channel” be construed at least broadly
`
`enough to encompass “a channel confined to a frequency range.” This is the con-
`
`struction upon which both parties agreed in the Apple litigation. See Ex. 1006, p.
`
`76.
`
`With regard to mask-defined, bandlimited channels, the ‘891 patent de-
`
`scribes the following:
`
`[A]ccording to the present invention, increased transmission capacity
`is achieved by operating more than one carrier in a standard bandlim-
`ited channel assigned for mobile paging use, such as in the Narrow-
`band Personal Communications Service or the Part 22 Service. In the
`modulation technique of the present invention, carriers operating at
`
`
`1 Because the standards of claim interpretation applied in litigation differ from
`
`PTO proceedings, any interpretation of claim terms in this IPR is not binding upon
`
`Apple in any litigation related to the subject patent. See In re Zletz, 13 USPQ2d
`
`1320, 1322 (Fed. Cir. 1989).
`
`4
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`different frequencies are fit within a single bandwidth allocation in a
`manner consistent with FCC mask requirements.
`Ex. 1001, 5:11-19.
`
`In other words, the “bandlimit” and “mask” that define the mobile paging
`
`channel described in the ‘891 patent simply refer to a “standard” range of frequen-
`
`cies that meet certain FCC requirements for mobile paging channels. Accordingly,
`
`one of ordinary skill in the art would have understood a “single mask-defined,
`
`bandlimited channel” to be a channel confined to a frequency range (e.g., the “Nar-
`
`rowband Personal Communications Service” frequency range defined by the FCC).
`
`2.
`In Mobile Telecommunications Technologies, LLC v. Clearwire Corp., Case
`
`“Plurality of Transmitters” (Claim 5)
`
`No. 2:12-CV-308 (E.D. Tex.) (“the Clearwire Litigation”), a previous case that in-
`
`volved only U.S. Patent No. 5,590,403 (“the ‘403 Patent”), the district court con-
`
`strued the term “transmitter” according to its plain and ordinary meaning but of-
`
`fered the following additional conclusion: “[T]he Court rejects [Plaintiff’s] impli-
`
`cation that transmitting multiple signals or outputs from a single structural unit can
`
`suffice as multiple transmitters.” Ex. 1007, p. 2. In the Apple Litigation, the dis-
`
`trict court adopted the same construction and reiterated the same conclusion for the
`
`claim term “transmitter” found in the asserted ‘403 Patent, ‘891 Patent, and U.S.
`
`Patent No. 5,915,210 (“the ‘210 Patent”).
`
`5
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`In the ‘403 Patent and ‘210 Patent, which share the same specification, a
`
`configuration that emanates multiple carriers from a common transmission source
`
`(e.g., antenna 1320) is referred to as a single transmitter or base transmitter unit.
`
`See Ex. 1001, FIGS. 13 and 14, 15:41-16:23. However, in the ‘891 Patent, a con-
`
`figuration that emanates multiple carriers from a common transmission source
`
`(e.g., antenna 15) is referred to as a “co-located transmitter system.” See Ex. 1001,
`
`FIGS. 1 and 2, col. 4:7-11. In addition, claim 5 of the ‘891 Patent requires “co-
`
`locating said plurality of transmitters such that said plurality of carriers can be em-
`
`anated from the same transmission source.” Ex. 1001, 6:35-37.
`
`Accordingly, for purposes of this petition in which the broadest reasonable
`
`interpretation applies, the term “plurality of transmitters” in the ‘891 Patent en-
`
`compasses a configuration in which multiple carriers are emanated from the same
`
`transmission source (e.g., as illustrated in FIGS. 1 and 2).
`
`3.
`The preambles of independent claims 1, 3, and 5 recite the term “paging.”
`
`“Paging” (Claims 1, 3, 5)
`
`In particular, claim 1 recites “[a] method of operating a plurality of paging carri-
`
`ers.” Claim 3 recites “[a] method of operating at least two paging carriers.” Claim
`
`5 recites “a paging system having a plurality of transmitters.” This is the only re-
`
`cited occurrence of the term “paging.”
`
`Petitioner submits that the broadest reasonable interpretation of the term
`
`6
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`“paging” should at least encompass the construction advanced by Patent Owner
`
`during litigation. And, in the Apple Litigation, the Patent Owner argued that “pag-
`
`ing” is a non-limiting “descriptive name for the systems in which the methods re-
`
`cited by the Claims may be performed.” See Ex. 1006, p. 17. Accordingly, for
`
`purposes of this petition in which the broadest reasonable interpretation standard
`
`applies, Petitioner proposes that the term “paging” be construed as a non-limiting
`
`descriptive name for the systems in which the methods recited by the Claims may
`
`be performed.
`
`IV. SUMMARY OF THE ‘891 PATENT
`
`A. Brief Description
`In general, the ‘891 patent relates to operating more than one carrier within a
`
`single channel. The Abstract of the ‘891 patent states:
`
`A method of multicarrier modulation using co-located transmitters to
`achieve higher transmission capacity for mobile paging and two-way
`digital communication in a manner consistent with FCC emission
`mask limits. Co-location of the transmitters obviates the need for
`stringent, symmetrical subchannel interference protection and pro-
`vides for a wider range of operating parameters, including peak fre-
`quency deviation, bit rate, and carrier frequencies, to obtain optimal
`transmission performance.
`The ‘891 patent includes 5 claims, of which claims 1, 3 and 5 are independ-
`
`ent.
`
`7
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`
`
`Summary of the Prosecution History of the ’891 Patent
`
`B.
`The ‘891 patent issued on August 19, 1997 from U.S. Patent Application
`
`No. 08/480,718, which was filed on June 7, 1995 with original claims 1-8, of
`
`which claims 1, 3, and 5 were independent. See Ex. 1002, pp. 47-48.
`
`In the first Office Action, the Examiner immediately allowed claims 1 and 2,
`
`rejected claims 3 and 4 solely under 35 U.S.C. 112, rejected claims 5-7 based on
`
`U.S. Patent No. 3,488,445, and objected to claim 8 as allowable if rewritten in in-
`
`dependent format. In particular, the Office Action noted:
`
`As to claims 1, 3 and 8, the frequency difference between the center
`frequency of the outer most carriers and the band edge of the mask is
`greater than half the frequency difference between the center frequen-
`cies of each adjacent carrier, is not taught or suggested in the prior art
`of record.
`Ex. 1002, p. 96.
`
`The Applicant amended claim 3 to overcome the section 112 rejection, re-
`
`wrote claim 8 in independent form to include the features of independent claim 5,
`
`and eventually cancelled rejected claims 5-7.
`
`8
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY
`CLAIM FOR WHICH AN IPR IS REQUESTED, THUS ES-
`TABLISHING A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ‘891 PATENT IS UNPATENTA-
`BLE
`
`In this Section, Apple proposes grounds of rejection for the Challenged
`
`Claims and, thus, explains the justification for IPR. The references presented in
`
`this Section demonstrate that the features found to justify allowance of independent
`
`claims 1, 3, and 5, as well as the other features of these claims, were known in the
`
`art and therefore establish a reasonable likelihood that at least independent claims
`
`1, 3, and 5 are unpatentable.
`
`As noted above, the Examiner found that the record before him lacking with
`
`regard to a single feature: that the frequency difference between the center fre-
`
`quency of the outer most carriers and the band edge of the mask is greater than half
`
`the frequency difference between the center frequencies of each adjacent carrier.
`
`As fully described below, Petrovic and Cimini disclose this feature, together with
`
`the other features of the claims for which an IPR is being sought.
`
`[GROUND 1] – Petrovic Anticipates Claims 1-5
`
`A.
`The features of claims 1-5 of the ‘891 patent are anticipated by Petrovic,
`
`rendering each of these claims unpatentable under 35 U.S.C. § 102(b).
`
`Petrovic is a paper presented at the 1993 IEEE SoutheastCon by Dr.
`
`Rade Petrovic and two of the inventors of the ‘891 patent Walt Roehr and
`
`9
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`Dennis Cameron. As a result, Petrovic describes a nearly identical system to
`
`the one described and claimed in the ‘891 patent.
`
`In particular, Petrovic describes the authors’ “efforts to increase both
`
`bit rate and spectral efficiency in simulcast paging networks.” Ex. 1008, p.
`
`1, Introduction. To accomplish this goal, Petrovic outlines a “multicarrier
`
`permutation modulation technique” that “can be used in simulcast networks
`
`with high power transmitters.” Ex. 1008, p. 1, abstract. This type of modu-
`
`lation is often classified as Multicarrier Modulation (MCM). Ex. 1008, p. 1,
`
`Proposed Modulation Technique. The MCM technique described by Pe-
`
`trovic involves encoding data across eight subcarrier frequencies within a
`
`band-limited channel. See Ex. 1008, p. 1, Proposed Modulation Technique;
`
`see also Ex. 1004, ¶ 18. “The signal spectrum at transmitter output is pre-
`
`sented in Fig. 1, and 2.” Ex. 1008, p. 2, Experiments.
`
`The proposed multicarrier permutation modulation technique includes
`
`“moving the current emission mask boundaries away from the center fre-
`
`quency by +/- 12.5 kHz. Ex. 1008, p. 1, Proposed Modulation Technique.
`
`This would give a 35 kHz pass band in the middle of the channel and 7.5
`
`kHz guard bands on each side for the skirts of the spectrum.” Ex. 1008, p. 1,
`
`Proposed Modulation Technique. To illustrate the mask boundaries of the
`
`band-limited channel, Petrovic guides the reader to “[s]ee dashed lines in
`
`10
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`Figs. 1 and 2,” which “represent[] the proposed emission mask.” Ex. 1008,
`
`p. 1, Proposed Modulation Technique; p. 2, Experiments. The following
`
`Annotation 1 of FIG. 1 highlights the guard bands with relation to the mask
`
`boundaries. See Ex. 1004, ¶ 19.
`
`50 kHz
`Channel
`
`7.5 kHz
`Guard Band
`
`7.5 kHz
`Guard Band
`
`
`These 7.5 kHz guard bands are each only a portion of the frequency
`
`difference between the center frequency of the outer most of the carriers and
`
`the band edge of the mask defining the channel. Thus, the frequency differ-
`
`11
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`ence between the center frequency of the outer most of the carriers and the
`
`band edge of the mask defining the channel is greater than 7.5 kHz.
`
`Petrovic further describes that, “[i]n order to fully utilize the allocated spec-
`
`trum, and provide fast fall-off of the spectrum in the guard band we propose eight
`
`subcarriers spaced 5 kHz apart, so that there is exactly 35 kHz spacing between
`
`end subcarriers.” See Ex. 1008, p. 1. The following Annotation 2 of FIG. 1 high-
`
`lights the spacing between the center frequency of the subcarriers described by Pe-
`
`trovic. See Ex. 1004, ¶ 21.
`
`
`
`12
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`Taking these teachings together, Petrovic describes a guard band of 7.5 kHz
`
`(as shown in Annotation 1) and a spacing between the center frequency of adjacent
`
`carriers of 5 kHz (as shown in Annotation 2). In other words, the frequency differ-
`
`ence between the center frequency of the outer most of the carriers and the band
`
`edge of the mask defining said channel (which is greater than 7.5 kHz) is more
`
`than half the frequency difference between the center frequencies of each adjacent
`
`carrier (which is 5 kHz), as required by claim 1. Thus, Petrovic describes the fea-
`
`ture that led to the allowance of the ‘891 patent.
`
`In Petrovic’s modulation scheme, adjacent subcarriers partially overlap each
`
`other. The following Annotation 3 of FIG. 1 shows the hypothetical position of the
`
`eight subcarriers within the bandlimited channel, with carriers/subchannels 1, 2, 4
`
`and 8 being 'ON' and carrier/subchannels 3, 5, 6, and 7 being ‘OFF’.
`
`13
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`
`
`Where the value of the transmitted signal between carrier/subchannel 1 and
`
`carrier/subchannel 2 (highlighted in blue below) does not return to practical zero
`
`(highlighted as a red broken line that extends the lowest point of the mask), the
`
`carrier/subchannel 1 overlaps adjacent carrier/subchannel 2. This is illustrated in
`
`the following Annotation 4 of an excerpt of FIG. 1, which is shown side-by-side
`
`with a similarly annotated FIG. 5A of the ‘891 patent to illustrate the similar type
`
`of overlap.
`
`14
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`
`
`Petrovic describes using a transmitter with four subtransmitters to transmit
`
`the eight subcarriers. Ex. 1008, p. 2, Experiments. In particular, “[e]ach transmit-
`
`ter has four subtransmitters capable of 4-FSK over a subset of the 8 frequencies.
`
`Outputs of the subtransmitters are combined and sent to a common antenna.” Id.
`
`Thus, each of the eight subcarriers are transmitted from the same location (i.e., the
`
`common antenna). See Ex. 1004, ¶ 25.
`
`In addition to the elements discussed above with regard to claims 1-4, claim
`
`5 includes an additional element that requires “co-locating said plurality of trans-
`
`mitters…” As described in Section III(C)(2), supra, the broadest reasonable inter-
`
`pretation of the term “plurality of transmitters” should encompass a configuration
`
`in which multiple carriers are emanated from the same antenna. Under this inter-
`
`pretation, Petrovic anticipates claim 5.
`
`15
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`In particular, Petrovic describes that “[e]ach transmitter has four subtrans-
`
`mitters capable of 4-PSK over a subset of the 8 frequencies. Outputs of the sub-
`
`transmitters are combined and sent to a common antenna.” Ex. 1008, p. 2, Exper-
`
`iments. A block diagram of the four “subtransmitters” described by Petrovic
`
`would be structured in a similar manner to the systems shown in either of Figures 1
`
`and 2 of the ‘891 patent, except with four data sources and modulators instead of
`
`two. See Ex. 1004, ¶ 26. Moreover, Petrovic describes that “[o]utputs of the sub-
`
`transmitters are combined and sent to a common antenna [i.e., transmission
`
`source].” Ex. 1008, p. 2, Experiments (emphasis added). Therefore, under the
`
`broadest reasonable interpretation standard, the four subtransmitters described by
`
`Petrovic read on “co-locating [a] plurality of transmitters such that said plurality of
`
`carriers can be emanated from the same transmission source,” as recited in claim 5.
`
`1. Claim 1
`A method of operating a plurality of paging carriers in a single mask-
`
`defined, bandlimited channel comprising the step of
`
`Petrovic describes: “The multicarrier permutation modulation technique
`
`proposed in this paper provides higher bit rates and spectrum efficiencies than that
`
`achieved in any state-of-the-art radio paging system. It can be used in simulcast
`
`networks with high power transmitters, where long symbol intervals and noncoher-
`
`ent detection are required." Ex. 1008, p. 1, Abstract (emphasis added).
`
`16
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`Furthermore, Petrovic describes the use of a mask to define a bandlimited
`
`channel: "First we propose doubling the channel bandwidth in order to allow high-
`
`er throughput. This should be done by moving the current emission mask bound-
`
`aries away from the center frequency by +/- 12.5 kHz. This would give a 35 kHz
`
`pass band in the middle of the channel and 7.5 kHz guard bands on each side for
`
`the skirts of the spectrum." Ex. 1008, p. 1, Proposed Modulation Technique (em-
`
`phasis added). In other words, Petrovic describes a bandlimit (i.e., a pass band of
`
`the channel) of 35 kHz. See Ex. 1004, ¶ 19-21.
`
`Additionally, Petrovic describes a plurality of carriers on the same channel:
`
`"In order to fully utilize the allocated spectrum, and provide fast fall-off of the
`
`spectrum in the guard band we propose eight subcarriers spaced 5 kHz apart, so
`
`that there is exactly 35 kHz spacing between end subcarriers." Ex. 1008, p. 1, Pro-
`
`posed Modulation Technique.
`
`transmitting said carriers from the same location with said carriers having
`
`center frequencies within said channel
`
`Petrovic describes a transmitter that transmits data over eight subcarriers via
`
`a single antenna (i.e., the “same location”): "Each transmitter has four subtransmit-
`
`ters capable of 4-PSK over a subset of the 8 frequencies. Outputs of the subtrans-
`
`mitters are combined and sent to a common antenna." Ex. 1008, p. 2, Experiments.
`
`17
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`“In order to fully utilize the allocated spectrum, and provide fast fall-off of
`
`the spectrum in the guard band we propose eight subcarriers spaced 5 kHz apart,
`
`so that there is exactly 35 kHz spacing between end subcarriers.” Ex. 1008, p. 1,
`
`Proposed Modulation Technique. In other words, each carrier is centrally located
`
`within evenly spaced subchannels such that the center frequency of each carrier is
`
`5 kHz apart, as shown in the following Annotation 2 of FIG. 1:
`
`
`
`See Ex. 1004, ¶ 21-22.
`
`such that the frequency difference between the center frequency of the outer
`
`most of said carriers and the band edge of the mask defining said channel is more
`
`than half the frequency difference between the center frequencies of each adjacent
`
`carrier.
`
`18
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`Petrovic describes that the frequency difference between the center frequen-
`
`cy of the outer most of said carriers and the band edge of the mask defining said
`
`channel is more than half the frequency difference between the center frequencies
`
`of each adjacent carrier.
`
`In particular, Petrovic describes: "First we propose doubling the channel
`
`bandwidth in order to allow higher throughput. This should be done by moving the
`
`current emission mask boundaries away from the center frequency by +/- 12.5
`
`kHz. This would give a 35 kHz pass band in the middle of the channel and 7.5 kHz
`
`guard bands on each side for the skirts of the spectrum. . . . In order to fully utilize
`
`the allocated spectrum, and provide fast fall-off of the spectrum in the guard band
`
`we propose eight subcarriers spaced 5 kHz apart, so that there is exactly 35 kHz
`
`spacing between end subcarriers." Ex. 1008, p. 1, Proposed Modulation Tech-
`
`nique.
`
`In other words, there is 5 kHz between the center frequencies of each adja-
`
`cent carrier and 7.5 kHz between the center frequency of the outer most of said
`
`carriers and the band edge of the mask defining the channel. 7.5 is more than half
`
`of 5. See Ex. 1004, ¶ 21-22. This is illustrated in the above Annotations 1 and 2 of
`
`FIG. 1.
`
`2.
`The method of claim 1 wherein adjacent carriers overlap with each other.
`
`Claim 2
`
`19
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`The following Annotation 3 of FIG. 1 clearly shows a case in which carri-
`
`ers/subchannels 1, 2, 4 and 8 are 'ON' and carrier/subchannels 3, 5, 6, and 7 are
`
`‘OFF’:
`
`See Ex. 1004, ¶ 23; see also Ex. 1008, p. 2, Experiments.
`
`Moreover, where the value of the transmitted signal between carri-
`
`
`
`er/subchannel 1 and carrier/subchannel 2 (highlighted in blue below) does not re-
`
`turn to practical zero (highlighted as a red broken line that extends the lowest point
`
`of the mask), the carrier/subchannel 1 overlaps adjacent carrier/subchannel 2. This
`
`is illustrated in the following Annotation 4 of an excerpt of FIG. 1:
`
`20
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`See Ex. 1004, ¶ 24.
`
`This is comparable to the overlap shown in FIG. 5A of the ‘891 patent:
`
`
`
`3.
`A method of operating at least two paging carriers each in a corresponding
`
`Claim 3
`
`subchannel of a single mask-defined, bandlimited channel comprising the step of
`
`
`
`21
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`Petrovic describes: “The multicarrier permutation modulation technique
`
`proposed in this paper provides higher bit rates and spectrum efficiencies than that
`
`achieved in any state-of-the-art radio paging system. It can be used in simulcast
`
`networks with high power transmitters, where long symbol intervals and noncoher-
`
`ent detection are required." Ex. 1008, p. 1, Abstract (emphasis added).
`
`Furthermore, Petrovic describes the use of a mask to define a bandlimited
`
`channel: "First we propose dou-bling the channel bandwidth in order to allow
`
`higher throughput. This should be done by moving the current emission mask
`
`boundaries away from the center fre-quency by +/- 12.5 kHz. This would give a
`
`35 kHz pass band in the middle of the channel and 7.5 kHz guard bands on each
`
`side for the skirts of the spectrum." Ex. 1008, p. 1, Proposed Modulation Tech-
`
`nique (emphasis added). In other words, Petrovic describes a bandlimit (i.e., a pass
`
`band of the channel) of 35 kHz. See Ex. 1004, ¶ 19-21.
`
`Additionally, Petrovic describes a plurality of carriers on the same channel:
`
`"In order to fully utilize the allocated spectrum, and provide fast fall-off of the
`
`spectrum in the guard band we propose eight subcarriers spaced 5 kHz apart, so
`
`that there is exactly 35 kHz spacing between end subcarriers." Ex. 1008, p. 1, Pro-
`
`posed Modulation Technique.
`
`transmitting said carriers from the same location with each carrier centrally
`
`located in said corresponding subchannel
`
`22
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`Petrovic describes a transmitter that transmits data over eight subcarriers via
`
`a single antenna (i.e., the “same location”): "Each transmitter has four subtransmit-
`
`ters capable of 4-PSK over a subset of the 8 frequencies. Outputs of the subtrans-
`
`mitters are combined and sent to a common antenna." Ex. 1008, p. 2, Experiments.
`
`“In order to fully utiliz